“Supreme Court Clarifies Requirements for Proving Inducement of Infringement”June 2, 2014
The Supreme Court has held that there can be no liability for inducement of infringement of a patent under 35 U.S.C. § 271(b) if no one has directly infringed the patent.
In a unanimous decision authored by Justice Alito, the Supreme Court reversed the Federal Circuit’s en banc decision in Akamai Technologies v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012), which held that a party may be liable for inducement of infringement of a method claim even if no single entity is liable for direct infringement, if one party performs some steps of a claimed method and induces another party to perform the remaining steps. The Court stated that the Federal Circuit’s analysis "fundamentally misunderstands what it means to infringe a method patent," because there can be no liability for inducement, unless an act of direct infringement has occurred. The Court refused to address the Federal Circuit’s standard for direct infringement of a method claim, as stated in Muniauction, Inc. v. Thompson Corp., 532 F.3d 1318 (Fed. Cir. 2008), that direct infringement of a method claim requires a single party to perform each claimed step, or exercise "control or direction" over the entire process such that steps performed by third parties are attributable to the accused direct infringer. The Court stated that the issue for which the case was reviewed was to address inducement, not direct infringement, but that on remand the Federal Circuit would be free to revisit the requirements for direct infringement if it so chooses.
This decision may make it more difficult for a patentee to prove that there has been inducement of infringement of a method claim. In addition to proving the elements of inducement, a patentee will be required to prove that a single party is liable for direct infringement. The decision also highlights the importance of considering the identity and activities of potential infringers when drafting and prosecuting method claims before the U.S. Patent and Trademark Office.
If you have questions or concerns relating to this decision, please contact the author or any attorney at Marshall, Gerstein & Borun.
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